HDFC Bank Limited v Punit Jain
WIPO Case No. D2024-0177
•25-03-2024
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
HDFC Bank Limited v. Punit Jain
Case No. D2024-0177
1. The Parties
The Complainant is HDFC Bank Limited, India, represented by SAMVĀD: PARTNERS, India.
The Respondent is Punit Jain, India.
2. The Domain Name and Registrar
The disputed domain name <hdfcinternational.com> is registered with GoDaddy.com, LLC, United States
(the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2024.
On January 17, 2024, the Center transmitted by email to the Registrar, a request for registrar verification in connection with the disputed domain name. On January 17, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name
which differed from the named Respondent (John Doe) and contact information in the Complaint. The
Center sent an email communication to the Complainant on January 18, 2024 providing the registrant and
contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the
Complaint. The Complainant filed an amended Complaint on February 2, 2024.
The Center, on February 7 2024, verified that the Complaint satisfied the formal requirements of the Uniform
Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) and the WIPO Supplemental Rules for Uniform Domain Name
Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on February 8, 2024. In accordance with the Rules, paragraph
5, the due date for Response was February 28, 2024. This Panel notes that the Center has complied with all
of its obligations to serve a formal notice of the Complaint on the Respondent through all known means and
modes of communication but however, the Respondent did not submit any response within the stipulated
deadline. Accordingly, the Center notified the Respondent’s default on March 5, 2024.
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The Center appointed Saisunder Nedungal Vidhya Bhaskar as the sole panelist in this matter on March 11,
2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of
Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure
compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant, HDFC Bank Limited, claims that it is one of India’s largest private banks and was among
the first to receive approval from the Reserve Bank of India (RBI), India’s central bank, to set up a private
sector bank in 1994 with a registered office in Mumbai, India.
The Complainant provides a wide range of banking and financial services catering to diverse needs of
customers and claims that it has a nation-wide network of 7,945 branches situated in across 3,836 cities in
India.
It is noted that with effect from July 1, 2023, the Complainant’s associate and promoter entity, Housing
Development Finance Corporation Limited (“HDFC Limited”) merged into the Complainant to create a
financial sector behemoth, with a full suite of banking and other financial products under it.
The said merger was effected through a scheme of amalgamation duly sanctioned and confirmed by the
Hon’ble National Company Law Tribunal, Mumbai Bench, India vide its order dated March 17, 2023.
Accordingly, the Complainant claims to have become the successor-in-title to the trademarks and trade name “HDFC” with effect from July 1, 2023.
It is further noted from the various documents and annexes submitted by the Complainant as part of its Complaint that the aforesaid HDFC Limited has been in existence since October 17, 1977, and accordingly, it can be noticed that the trade name and trademark “HDFC” came to be in first use by the Complainant’s predecessor as early as in October 1977.
The Complainant claims to hold multiple trademark registrations and/or has applied for registration of various trademarks containing the word HDFC and/or its associated labels and logos in India and other jurisdictions. Some of the relevant trademark applications can be noted as follows:
S.No Application Trademark Class Date of Status
No Registration
1 1426533 36 February 25, Registered
2008
2 454215 6 June 30, Registered 1993
3 965388 9 December Registered 22, 2003
4 2466371 HDFC (WORD) 9 January 24, Registered 2013 5 2466372 HDFC (WORD) 36 July 6, 2018 Registered 6 2466373 HDFC (WORD) 37 July 6, 2018 Registered 7 2466374 HDFC (WORD) 41 July 6, 2018 Registered 8 2466375 HDFC (WORD) 16 December Registered 11, 2014
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9 2466376 HDFC (WORD) 35 July 6, 2018 Registered
10 2466377 HDFC (WORD) 38 May 30, Registered 2018 11 2466378 HDFC (WORD) 39 July 6, 2018 Registered 12 2466379 HDFC (WORD) 40 July 13, Registered 2018 13 2466380 HDFC (WORD) 42 September Registered 20, 2016 14 2466381 HDFC (WORD) 43 September Registered 20, 2016 15 2466382 HDFC (WORD) 44 April 18, Registered 2018 16 2466383 HDFC (WORD) 45 April 18, Registered 2018
The Complainant also states that it has made an application to the Indian Trademark Registry seeking
| recognition of the | logo as a well-known mark in India, which has since been accepted |
by the Indian Trademark Registry, as has now been verified by this Panel.
The Complainant also relies on its select illustrative national and international recognitions and achievements such as the recognition for Best Large Bank in India by Fortune India – Grant Thornton
Bharat’s study of India’s Best Banks 2022, the recognition for Best Bank in India by Euromoney Awards for
Excellence 2022, recognition for being ranked as India’s Most Valuable Brand for the 7th consecutive year as
per the survey, ‘2020 BrandZ™ Top 75 Most Valuable Indian Brands, conducted by Kantar Millward Brown
and recognition for the ‘Most Committed to High Governance Best Standards’ by Finance Asia’s Best
Companies in Asia Poll 2022.
The Complainant also uses the trademark “HDFC” in the string of approximately 189 domain names and it is also noted that the Complainant is the owner of the “.hdfcbank” Top Level Domain (“TLD”).
The disputed domain name was registered on January 25, 2020, and it resolves to the Registrar’s parking page displaying pay-per-click links.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer
of the disputed domain name.
As regards the first element of the policy the Complainant contends that:
The registration of the disputed domain name is identical or confusingly similar to the Complainant’s
trademark HDFC in which the Complainant has rights. In support of the contention the Complainant asserts
that it is the rightful owner of the trademark HDFC in India and several jurisdictions around the globe as
already noted in Section 4- Factual Background.
It has achieved extensive recognition in relation to its use of the trademark and trade name HDFC since its adoption in October 1977.
page 4
It is the registered proprietor of the trademark ‘HDFC’ in India and the trademark “HDFC Bank” in India and several other jurisdictions and relies on the panel decision in the case of Horten Advokatpartnerselskab v. Domain ID Shield Service CO., Limited / Krutikov Valeriy Nikolaevich, WIPOCase No. D2016-0205, whereunder the panel held that, “It has been a consensus view among UDRP panels that if the complainant owns a registered trademark, then it generally satisfies the threshold requirement of having trademark
rights.”
Even though the disputed domain name, <hdfcinternational.com>, differs from the registered trademark by
the addition of a descriptive word i.e., ‘international’, it does not serve sufficiently to distinguish or
differentiate the disputed domain name from the Complainant’s trademark. The Complainant reiterates that
previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently
Advance Magazine Publishers Inc., where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
differ the domain name from the registered trademark. In the case of
Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657, the panel relied on the
panel’s observation in the case Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No.
2. As regards the second element of the policy, the Complainant contends that the Respondent lacks
rights or legitimate interests in the disputed domain name for the below mentioned reasons:
The Respondent is an individual with an address in India and neither does he have any relationship or nexus
with the Complainant, nor has the Complainant ever authorized the Respondent to use its trademark ‘HDFC’
as part of the disputed domain name.
The fact that the domain name was registered in 2020 but is still parked, as of February 2024, indicates that
the Respondent has no legitimate interest in using the domain name in connection with bona fide offering of
goods or services.
The Complainant relies on the panel’s decision in Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case
No. D2009-0947, whereunder it was held that- “where the Complainant has not authorised, licensed, or
permitted the Respondent to register or use the disputed domain name or to use the Trade Mark and where
the Complainant has prior rights in the Trade Mark which precede the Respondent's registration and use of
the disputed domain name, it can be stated that the Complainant has therefore established a prima facie
case that the Respondent has no rights and legitimate interests in the disputed domain name and thereby
shifted the burden to the Respondent to produce evidence to rebut this presumption”.
In relation to paragraph 4 (c) of the policy regarding the illustrative circumstances to be demonstrated by the respondent to show the rights or legitimate interests in the disputed domain name, it has been stated by the Complainant that the Respondent has not used the disputed domain name or the term ‘HDFC’ in connection
with a bona fide offering of goods or services. Secondly, the rightful owner of the trademark ‘HDFC’ is the
Complainant, and the Respondent is not commonly known by the disputed domain name or the term ‘HDFC’.
Thirdly, the Respondent has not been using the disputed domain name for any legitimate non-commercial or
fair use, as the domain name was registered in 2020 but is still parked, as of February 2024 and hence the
Respondent does not fall within the ambit of any of the circumstances captured in paragraph 4(c) of the
Policy.
3. As regards the third element of the policy, the Complainant contends that the disputed domain name was registered and is being used in bad faith for the below mentioned reasons:
The Complainant states that the disputed domain name was registered in 2020 but however, the
Complainant has applied for registration of the ‘HDFC’ trademark as early as 2000 with earliest usage date
recorded as September 1978.
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The Complainant states that it has demonstrated that it holds a number of trademark registrations for ‘HDFC’
and HDFC formative trademarks and also owns several domain names comprising the trademark ‘HDFC’,
most of which predate the date of registration of the disputed domain name on January 25, 2020 and hence
the Complainant submits that the Respondent’s act of registering the disputed domain name which contains
the Complainant’s trademark as a dominant feature, in itself, is suggestive of bad faith. In this regard, the
Sanofi-Aventis v. Abigail Wallace
Complainant has also placed reliance upon the panel decision in , WIPO trademark of the Complainant was registered long before the registration of the disputed domain name.”
The Complainant further submits that it ought to be presumed that the Respondent had constructive notice of
the Complainant’s trademark owing to the fact that the trademark ‘HDFC’ is well established and such
knowledge of the Respondent is an indicator of bad faith on its part in having registered the disputed domain
The Gap, Inc. v. Deng Youqian
name. In this regard, the Complainant relies on the panel decision in , WIPO registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements.
The Complainant reiterates that: (i) the disputed domain name was registered in 2020 and is still parked and not operational, as of February 2024; (ii) the Respondent has, therefore, never used the domain name in dispute; (iii) additionally, the Respondent is from India where the Complainant is a financial sector behemoth
and the Complainant’s mark ‘HDFC’ is well established and recognized. This being the case, the
Complainant contends that the Respondent has intentionally registered the disputed domain name which
would create a likelihood of confusion with the Complainant’s trademark, in the minds of Internet users.
Thus, the Complainant submits that the Respondent has intentionally attempted to attract Internet users to the disputed domain name, for commercial gain, by creating a likelihood of confusion with the Complainant's mark.
Lastly, the Complainant also contends that since the Complainant’s line of business, which is providing financial services, is a strictly regulated space if the disputed domain name becomes functional and operative, it could deceive the general public to believe that the disputed domain name belongs to the Complainant and that this would, in turn, mislead consumers, divert them to the disputed domain name that does not belong to the Complainant, thereby leading to severe customer grievances and financial losses.
This would consequently tarnish the Complainant’s reputation and goodwill garnered in the market.
B. Respondent
The Respondent did not furnish its response to the Complaint herein and bearing this in mind and in this
background, the Panel shall draw such adverse inferences from the absence of the Respondent’s reply as it
considers appropriate in the circumstances.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed in the administrative proceeding the Complainant must prove
that:
The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; and,
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and,
The disputed domain name has been registered and is being used in bad faith.
As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in any administrative proceeding.
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Further, as is the case in all UDRP proceedings, while this Panel notes that the burden of proof is on the
Complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that
the Complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that
the complainant’s claims are true. Further to paragraph 14(b) of the UDRP Rules however, panels have
been prepared to draw certain inferences in light of the particular facts and circumstances of the case e.g., where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.
A. Identical or Confusingly Similar
This Panel is satisfied that the Complainant has been able to establish that it has both statutory and common law rights over the word “HDFC”, by virtue of both its trademark registrations across several jurisdictions for the same and also owing to its extensive usage of the trademark and trade name “HDFC” in relation to its business.
It is well accepted that the first element functions primarily as a standing requirement. The standing (or
threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between
the Complainant’s trademark and the disputed domain name. See WIPO Overview of WIPO Panel Views on
Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.
The disputed domain name plainly contains the Complainant’s HDFC trademark, in addition to the word “international” and this addition (and the generic TLD extension “.com”) does nothing to preclude a finding of confusing similarity. In support of these findings the Panel relies on Advanced Magazine Publishers Inc. d/b/a Conde Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743 and also Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.
This Panel also notes that the “HDFC Bank” Logo of the Complainant has also been recognised as a well-
known trademark in India by the Indian Trademark Registry and hence it is stated that a moral duty has been
cast on panels such as this, to protect the bonafide and genuine proprietary rights of such complainants in
reputed trademarks against blatant cases of cybersquatting indulged in by the third parties as in this instant
dispute.
This Panel also takes specific note of the panel’s decision in Housing Development Finance Corporation Ltd. v. Shomprakash Sinha Roy, WIPO Case No. D2019-2567 in which it was observed that “the Complainant’s
trademark ‘HDFC’ has no established meaning or generic value but as a well-established brand and is
distinctive only of the Complainant and its services.”The Panel is therefore satisfied that the Complainant has
established that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Panel accepts the contentions of the Complainant that the Respondent has “neither used nor made any demonstrable preparations to use, the domain name or a name corresponding to the domain name in
connection with a bona fide offering of goods or services” and for this reason has inter alia failed to
demonstrate a right or legitimate interest in the disputed domain name as per paragraph 4(c) of the Policy.
The Panel agrees with the contention of the Complainant that the domain name was registered in 2020 but is still parked, as of February 2024, thereby indicating that the Respondent has no legitimate interest in using the domain name in connection with bona fide offering of goods or services.
This Panel holds that the Complainant has successfully demonstrated that it is the honest and rightful
proprietor and prior user of the trademark ‘HDFC’. The Panel notes that there is no evidence to show that
the Respondent is affiliated to the Complainant nor has it been authorised or licensed by the Complainant to
register the disputed domain name or any entity containing the Complainant’s trademark. In support of these
findings the Panel relies on the Swarovski Aktiengesellschaft v. Zhang Yulin, WIPOCase No. D2009-0947.
page 7
On a perusal and careful analysis of the available record, the Panel finds the Complainant has established a
prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The
Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any
relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise and hence the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1.
Accordingly, the Panel finds that the Complainant has established that the Respondent does not have any
rights or legitimate interests in the disputed domain name as specified in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel notes that the registration of the disputed domain name and its use of the same is evidently in bad
faith for the various reasons as stated hereinbelow:
Firstly, the trademark registrations of the Complainant pre-date the creation date of the disputed domain name and that the trademark HDFC of the Complainant has acquired substantial recognition through the various publicity and marketing efforts of the Complainant. The Panel agrees with the Complainant’s
submissions that it ought to be presumed that the Respondent had constructive notice of the Complainant’s
trademark owing to the fact that the trademark ‘HDFC’ is well established and such knowledge of the
Respondent is an indicator of bad faith on its part in having registered the disputed domain name.
Secondly, the Panel is of the view that the registration and usage of the disputed domain name is ex facie in
bad faith as stipulated under paragraph 4(b)(iv) of the Policy as all the evidence placed on record only
seems to indicate that the Respondent has intentionally attempted to attract, for commercial gain, Internet
users by creating a likelihood of confusion with the Complainant’s HDFC mark. In this regard, reliance is
also placed upon WIPO Overview 3.0, section 3.1.4, wherein “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely known trademark by an
unaffiliated entity can by itself create a presumption of bad faith”. In support of these findings the Panel
relies on decision in The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.
Thirdly, this Panel agrees with the Complainant’s contention that since the Complainant’s line of business,
which is providing financial services, is a strictly regulated space if the disputed domain name becomes
functional and operative, it could deceive the general public to believe that the disputed domain name
belongs to the Complainant and that this would, in turn, mislead consumers, divert them to the disputed
domain name that does not belong to the Complainant, thereby leading to severe customer grievances and
financial losses and this would also consequently tarnish the Complainant’s reputation and goodwill garnered
in the market. This indeed is a valid concern of the Complainant that cannot be brushed aside, more so
owing to the fact that in the recent past there has been an increasing trend of online financial scams and
frauds where innocent Internet users are being duped of their money, which needs to be nipped in the bud
by discouraging blatant cases of cybersquatting being indulged in by third parties as is the case in the instant
dispute.
Hence, it has to be concluded that the Respondent’s aim in registering the disputed domain name was to
profit from or exploit the Complainant’s trademark, which clearly establishes bad faith.
Accordingly, the Panel finds that the Complainant has established the third element of the Policy and that the
Respondent has registered and used the disputed domain name in bad faith.
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7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel
orders that the disputed domain name <hdfcinternational.com> be transferred to the Complainant.
/Saisunder Nedungal Vidhya Bhaskar/
Saisunder Nedungal Vidhya Bhaskar
Sole Panelist
Date: March 25, 2024
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